The Federal Circuit first began grappling with a flood of appeals from new Patent Trial and Appeal Board proceedings this year. And for appellants preparing to go before a three-judge panel with their own PTAB appeal, attorneys say there are a few good ways to improve long odds and make a case stand out from the crowd.
Law360’s midyear snapshot of intellectual property opinions issued by the Federal Circuit showed an appeals court largely inclined to back the U.S. Patent and Trademark Office’s PTAB, having affirmed the board's decisions 88 percent of the time in the first six months of 2015.
Put another way, appellants lost 88 percent of the time.
Those can seem like grim odds. But many parties appealing PTAB decisions on new types of patent reviews created by the America Invents Act are still in relatively uncharted legal territory — and anything’s possible.
Here are four strategies Federal Circuit advocates say appellants can use to give themselves a fighting chance.
Tell a Story
As a typical patent case makes its way through district court, counsel on both sides work tirelessly to develop a compelling story about the products and inventions in the case, to help clarify the issues for judges and juries who don’t handle IP law on a day-to-day basis.
In district court cases, attorneys have to work hard to tell the story of a patent in human terms. But for disputes that have just gone through the USPTO, that’s not always the case. Those issues have typically just been discussed among sophisticated IP professionals who all speak a common language.
Similar to the PTAB, the Federal Circuit is a very specialized court, and its judges spend significant amounts of their time adjudicating complex questions of patent law. All the same, advocates say, Federal Circuit judges want to clearly understand the story behind the disputed invention and the broader picture to make their decision.
“Judges are human beings,” Latham & Watkins LLP partner Matthew Moore said. “Whether it's a jury or a judge, people want to know, in plain English, what did you invent? What did you improve? What did you do?”
Avoid Disputes Over Facts
Federal Circuit advocates say that if at all possible, an appellant should stay as far away as possible from making their appeal a dispute over the facts, which can be a tough if not impossible case to win.
John Dragseth, a principal at Fish & Richardson, said that avoiding fights over facts is a good rule of thumb in any type of appeal. Instead, Dragseth counsels, look for a legal “hook.”
“That hook might be as simple as the lower tribunal getting the meaning of a patent term wrong,” Dragseth said. “More typically, it is that your opponent’s expert skipped a necessary step or ducked the key issue in the case.”
Disputes over facts can be particularly tough to win when you’re appealing a case from the PTAB, attorneys say, because the Federal Circuit must review questions of fact with a strong deference to the agency’s determinations.
One way to improve your odds is to try to pick a stance, if possible, that could allow the Federal Circuit to look beyond that required deference. For example, when it comes to questions of law — including obviousness and claim construction — the Federal Circuit can review those questions without deference to the agency, under the so-called de novo standard.
So if you can, attorneys say, put yourself in a position where the Federal Circuit can truly take its own long look at your case.
“How do I improve my odds? With all these cases coming up, the way I would suggest you do it is emphasize the points of error where the review is de novo,” said Robert H. Fischer of Fitzpatrick Cella Harper & Scinto. “De novo review is a very powerful thing”
Don’t Throw in Everything but the Kitchen Sink
With the swell of new appeals from the PTAB that the Federal Circuit must wade through, it’s important to get to the point, advocates say.
Work smart, and remember that appellants have a different and in many ways tougher standard of review to clear at the Federal Circuit. Focus on the arguments that are likely winners instead of trying every possible legal angle and seeing what sticks, according to Scott A. McKeown, a partner at Oblon McClelland Maier & Neustadt LLP.
“A lot of folks headed up to the Federal Circuit think it’s a chance to reargue their case, or make their brief a litany of complaints,” McKeown said. “You’ve got one or two issues that you can get the court's attention on. If you just send up a laundry list of complaints, you're doing your client a disservice.”
Do the Work Before the Appeal
Sophisticated and experienced attorneys can do a lot at oral argument, and crafting a good story to tell the Federal Circuit can go a long way. But there’s only so much even the best attorneys can do to shape and position a case for appeal, attorneys say, if the groundwork hasn’t been properly laid at the PTAB.
It’s important to do the hard work at the trial stage, build a solid case, and then if an appeal is necessary, an appellant will be in a much better position to tackle oral arguments in a creative way, according to Federal Circuit advocates.
“Make your record: A good expert declaration filed in the PTAB is worth a lot more than bare attorney argument on appeal,” Kirkland & Ellis LLP partner John O’Quinn said.
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